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Oracle v. Google: Court Fees

Oracle v. Google: Court Fees

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Published by Rachel King
ORDER REGARDING BILL OF COSTS
ORDER REGARDING BILL OF COSTS

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Published by: Rachel King on Sep 04, 2012
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09/04/2012

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   U  n   i   t  e   d   S   t  a   t  e  s   D   i  s   t  r   i  c   t   C  o  u  r   t
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12345678910111213141516171819202122232425262728IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF CALIFORNIAORACLE AMERICA, INC.,Plaintiff,v.GOOGLE INC.,Defendant.No. C 10-03561 WHA
ORDER REGARDINGBILL OF COSTS
Final judgment was entered in this patent-infringement action in June 2012. Now,defendant Google Inc. seeks costs (excluding attorney’s fees) of approximately four milliondollars. This amount is largely attributable to expert fees by court-appointed expert Dr. JamesKearl, and fees for electronic document discovery by third-party vendor, FTI Consulting, Inc.For reasons stated below, Google’s request is
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ENIED IN
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1.G
OOGLE IS THE
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REVAILING
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ARTY
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“Unless a federal statute, these rules, or a court order provides otherwise, costs — otherthan attorney’s fees — should be allowed to the prevailing party.” F
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P. 54(d).Federal Circuit authority governs the determination of which party was the prevailing party in allpatent actions, regardless of whether there were also non-patent claims asserted.
 Manildra Mill.Corp. v. Ogilvie Mills, Inc.
, 76 F.3d 1178, 1181 (Fed. Cir. 1996). Even if the action results in amixed judgment, the district court must nonetheless pick one side as the “prevailing party” forpurposes of taxing costs.
Shum v. Intel Corp.
, 629 F.3d 1360, 1366–67 (Fed. Cir. 2010).
Case3:10-cv-03561-WHA Document1241 Filed09/04/12 Page1 of 5
 
   U  n   i   t  e   d   S   t  a   t  e  s   D   i  s   t  r   i  c   t   C  o  u  r   t
   F  o  r   t   h  e   N  o  r   t   h  e  r  n   D   i  s   t  r   i  c   t  o   f   C  a   l   i   f  o  r  n   i  a
123456789101112131415161718192021222324252627282In
Shum
, the plaintiff sought (1) correction of inventorship for seven patents originallyissued to defendants and (2) $409 million in damages from state law claims, including breach of contract, unjust enrichment, negligent misrepresentation, and intentional interference withcontractual relations. The plaintiff won on his co-inventorship claim for five of the seven patentsbut lost on all his state claims for damages. Based on this mixed result, the Federal Circuit (ina 2-1 split decision) affirmed the district court’s finding that defendants were the prevailing partyfor purposes of taxing costs.
 Id.
at 1363–64.Google was the prevailing party in this action. Oracle initially sought six billion dollarsin damages and injunctive relief but recovered nothing after nearly two years of litigation and sixweeks of trial. Oracle initially alleged infringement of seven patents and 132 claims but eachclaim ultimately was either dismissed with prejudice or found to be non-infringed by the jury.Oracle also lost on its primary copyright claim for Java APIs. While it is true that Oracleprevailed on two minor, peripheral copyright claims, this win has not materially altered the legalrelationship among the parties. To sum up, the “action has not materially altered [Google’s]behavior in a way that directly benefits [Oracle].”
 Id.
at 1364. Therefore, Google is theprevailing party for purposes of taxing costs.
2.O
RACLE
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AILED
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RESUMPTION OF
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OSTS
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Finding that Google was the prevailing party, however, does not end the inquiry.Regional circuit law guides the district court’s discretion to award costs.
 Manildra Mill. Corp. v.Ogilvie Mills, Inc.
, 76 F.3d 1178, 1183 (Fed. Cir. 1996). Our court of appeals has held that:Although Rule 54(d)(1) does create a presumption for awardingcosts to prevailing parties, it also places on the losing party theburden to show why costs should not be awarded. . . . Propergrounds for denying costs include (1) a losing party’s limitedfinancial resources; (2) misconduct by the prevailing party; and (3)the chilling effect of imposing high costs on future civil rightslitigants, as well as (4) whether the issues in the case were closeand difficult; (5) whether the prevailing party’s recovery wasnominal or partial; (6) whether the losing party litigated in goodfaith; and (7) whether the case presented a landmark issue of national importance.
Case3:10-cv-03561-WHA Document1241 Filed09/04/12 Page2 of 5
 
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   F  o  r   t   h  e   N  o  r   t   h  e  r  n   D   i  s   t  r   i  c   t  o   f   C  a   l   i   f  o  r  n   i  a
123456789101112131415161718192021222324252627283
Quan v. Computer Sciences Corp.
, 623 F.3d 870, 888–89 (9th Cir. 2010) (citations andquotations omitted). The district court has discretion to allocate costs where there was a mixed judgment.
See Amarel v. Connell
, 102 F.3d 1494, 1523–24 (9th Cir. 1996).Oracle has failed to overcome the presumption of awarding costs to Google. The judgment, although technically mixed, was overwhelmingly in favor of Google. As discussed,Oracle had sought billions of damages and injunctive relief but was awarded nothing. While it istrue that a copyright issue presented, copyrightability of APIs, was of great importance to thecomputer industry, this is not enough to deny costs. The media attention following this case wasdue in large part because Oracle crafted broad, and ultimately overreaching, claims of copyrightinfringement. A close follower of this case will know that Oracle did not place great importanceon its copyright claims until after its asserted patents started disappearing upon PTOreexamination (indeed, Oracle’s first damages report barely mentioned copyright claims).Oracle did not bring its API copyright claim for the benefit of addressing “a landmark issue of national importance,” but instead fell back on an overreaching (albeit somewhat novel) theory of copyright infringement for its own financial interests late in litigation. On these facts, Oracle hasfailed to overcome the presumption of awarding costs to Google.
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J
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EARL
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Google’s bill of costs seeks nearly one million dollars in fees arising from the work of court-appointed expert Dr. James Kearl. Oracle objects.After appointing Dr. Kearl as a FRE 706 expert, the Court granted the parties’ stipulationthat Dr. Kearl’s professional fees and expenses would be paid “one half by each party withinthirty days of receipt of each of his monthly invoices” (Dkt. No. 413 at 4). This fee arrangementwas consistent with FRE 706, which provides that the court-appointed expert is to be paid “bythe parties in the proportion and at the time that the court directs — and the compensation is thencharged like other costs.” F
ED
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R.
 
E
VID
. 706(c)(2). Pursuant to 28 U.S.C. 1920, the Court maytax “[c]ompensation of court appointed experts.” Thus, Dr. Kearl’s fees are taxable costs.Oracle argues that because the parties’ stipulation and the order thereon were silent onpost-judgment taxing of Dr. Kearl’s fees, that meant that Dr. Kearl’s fees could not be taxed.
Case3:10-cv-03561-WHA Document1241 Filed09/04/12 Page3 of 5

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